START-UP TRADEMARK OPPOSITION POLICY

DECISION

WebTime Ltd. v. KAIM CHIGH LLC

Claim Number: FA0204000112542

PARTIES

Complainant is WebTime Ltd., Kecskemet, HUNGARY(“Complainant”) represented by Laszlo Kocso.  Respondent is KAIM CHIGH LLC, Golden, CO, USA (“Respondent”) represented by Vince.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <webbusiness.biz>, registered with Network Solutions Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Herman D. Michels as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 28, 2002; the Forum received a hard copy of the Complaint on April 28, 2002.

On May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on June 3, 2002.

Complainant submitted a timely Additional Submission on June 7, 2002.  Respondent submitted a timely Additional Submission on June 11, 2002. 

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Herman D. Michels as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it is the owner of the trade/servicemark WebBusiness which was registered by HPO (MSZH) in Classes 35 and 42 of the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks on December 16, 1996.  Class 35 of the Nice classification is for advertising; business administration; office functions.  Class 42 is for providing of food and drink; temporary accommodations; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes.  Complainant contends that WebBusiness is an international network of business to business buyers and sellers and that its services allow access to wide international markets of products and services.  Complainant contends that it intends to use the domain name WebBusiness for the services described operating since 1998. 

Complainant further contends that WebBusiness is completely identical with a domain name that is subject to the Complaint and that Respondent does not have any rights or legitimate interests in respect to that domain name.  Moreover, Complainant contends that Respondent has not been commonly known by the domain name and has not acquired trademark or servicemark rights for this domain name.

Finally, Complainant contends that Respondent has registered or used the domain name in bad faith, having registered the domain name primarily for selling, renting or otherwise transferring the domain name registration.

B. Respondent

Respondent contends that the domain name WebBusiness is a combination of two generic terms “ Web” and “Business”, which is not subject to protection by trademark due to its generic nature.    Respondent further points out that Complainant admits that it does not possess an international registered trademark, thereby limiting any exclusive rights which the Complainant should possess to the jurisdiction of the registration.

Respondent contends that Complainant’s claim with respect to the registration or use in bad faith of the domain name are not supportable and are unsubstantiated, and do not comply with Rule 4(b) of the Start-Up Trademark Opposition Policy.

Respondent further contends that it has a long history of involvement in internet based business, in particular the business of business assistance services and business directories which it has provided.  These directory services include a strategic alliance and involvement in the Our Hometown Project – for which Respondent is exclusively responsible for maintaining the business database for over 20 cities in the Denver, Colorado area and that it has provided this service  for two and one half years.  Specifically, Respondent claims that its customers and the community know that it is and runs a “web business”.

Respondent claims that it has maintained the directory service denoted by the service mark “ Weblinks” available on the internet by following the link “Search our WebLinks data base” which service has been available for five years.  Respondent intends to utilize the domain name <webbusiness.biz> to facilitate its provision of web‑related business advisory services and the provision of indexes of web-related businesses.  Due to the timing of the STOP claim, Respondent has thus far been denied the opportunity to utilize the domain name since the claim was received approximately 20 days after receipt of the approval of the registration of  the domain name.

C. Additional Submissions

Complainant, in an additional submission, contends that since its use is limited to Classes 35 and 42, it is not prohibited from doing business with the domain name in other categories and, in fact, points out that it has indicated that it did not care if Respondent wanted to do business in some other industry with the domain name in dispute.

Complainant emphasizes that it does possess a registered trademark for the string “WebBusiness”, whereas Respondent does not possess any registered trademarks nor patent services or products that would be at any rate directly related to the string “WebBusiness”.

Complainant also emphasizes that it uses a domain name for internet business content service called WebBusiness which is a service running since 1997 in six countries and seven languages and its customers and community identify it through its name WebBusiness. 

Finally Complainant contends that it has not abused the Start-Up Trademark Opposition Policy Procedures and that it has filed a Complaint based on genuine intellectual property rights.

Respondent, by an additional response, contends there is no basis to reverse the eligibility decision made by New Level in regard to the IP claim submitted by Complainant. 

Respondent further contends that Complainant has recognized not only its right to the domain name, but that Complainant’s statement implies a recognition of the generic nature of the name in question and acknowledges the Complainant’s ability to protect the name for use outside Complainant’s own jurisdiction.  Respondent further contends that the domain name is a generic phrase and is unprotectable.

Finally Respondent contends that Complainant has failed to demonstrate bad faith and has further failed to produce evidence establishing an exclusive right to the use of the term, WebBusiness, on a global basis or within the United States and that there is no possible basis on which to recommend a transfer of ownership of the domain name.

FINDINGS

The domain name at issue, <webbusiness.biz>, is identical to the servicemark WebBusiness in which Complainant has rights.  Complainant’s WebBusiness trade/servicemark was registered by HPO (MSZH) in Classes 35 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks on December 16, 1996.  The trademark number was 167220. Moreover, Complainant has applied for the international trademark of the word, WebBusiness, and the process has apparently started.  Although the term, WebBusiness, is a combination of two generic terms, “web” and “business”, Complainant has been using the name since 1998 in connection with its businesses. 

The WebBusiness is an international network of business to business buyers and sellers that allows access to wide international markets of products and services.  Qualified business partners post offers to buy or sell which are then sent immediately by e-mail to the registered subscribers who have pre-selected those criteria that correspond to the specific offers.  The Complainant plans in the future to use the domain name for these services.

Respondent has not demonstrated that it has any rights or interests in the domain name, <webbusiness.biz>.  Respondent has not demonstrated that it is the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name.  Respondent’s unsupported, self-serving allegations alone are insufficient to establish that it has rights or legitimate interests in respect to the domain name at issue.  The proofs, do not establish that Respondent registered or used the domain name, <webbusiness.biz>, in bad faith. See Twentieth Century Fox Film, Corp. v. Bernstein, FA 102862 (Nat. Arb. Forum, Feb. 27, 2002); see also Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002). 

In the circumstances here present the registration of the domain name, <webbusiness.biz>, does not constitute bad faith.  There was no proof in this record that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant for a valuable consideration in excess of Respondent’s out of pocket costs directly related to the domain name or that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark or that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.  Complainant’s unsupported charges are not sufficient to establish that the domain name was registered or being used in bad faith.  Moreover, the term WebBusiness is generic and there is no evidence that Respondent registered that domain name with the intent of capitalizing on Complainant’s servicemark. See Lumenas-kazo.o v. Express Ventures, Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000).

DISCUSSION

Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

The domain name <webbusiness.biz> is identical to the trademark/servicemark in which Complainant has rights.

Respondent’s Rights or Legitimate Interests

Respondent does not have any rights or legitimate interests in the domain name <webbusiness.biz>.

Registration or Use in Bad Faith

Based on the record submitted, the domain name, <webbusiness.biz> has not been registered or is being used in bad faith.

DECISION

Accordingly, the Complaint in the above entitled matter is hereby DISMISSED.  Subsequent challenges under the Start-Up Policy against this domain name SHALL BE permitted.

Herman D. Michels, Panelist
Dated: July 8, 2002

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